Standard Brands v. Smidler

• Decision Date: 10 August 1945
• Docket Number: No. 258.,258.
• Citation: 151 F.2d 34
• Parties: STANDARD BRANDS, Inc., v. SMIDLER.
• Court: U.S. Court of Appeals — Second Circuit

151 F.2d 34 (1945)

STANDARD BRANDS, Inc., v. SMIDLER.

No. 258.

Circuit Court of Appeals, Second Circuit.

August 10, 1945.

Schaines & Liberman, of New York City, for defendant-appellant.

Watson, Bristol, Johnson & Leavenworth, of New York City (Ellis W. Leavenworth, Tracy R. V. Fike, and Franklin M. Depew, all of New York City, of counsel), for plaintiff-appellee.

Before, SWAN, CHASE, and FRANK, Circuit Judges.

CHASE, Circuit Judge.

The plaintiff, a Delaware corporation, is the owner by assignment of the registered trade-mark "V-8" for a combination of eight vegetable juices. It sued the defendant, a citizen of New York, for infringement of its trade-mark and for unfair competition in the sale of dry vitamin tablets in packages marked with the symbol "V-8". It obtained a judgment in the District Court for the Eastern District of New York holding that the defendant had both infringed the mark and competed unfairly. A permanent injunction was issued restraining the defendant from continuing so to do. 56 F.Supp. 665.

The facts were stipulated and may be summarized as follows:

The plaintiff and its predecessors have sold large quantities of canned vegetable juices in New York and in interstate commerce continuously since July 17, 1937. The symbol "V-8" has been put in a prominent position on the cans, which are sold in grocery and delicatessen stores and in the grocery departments of department stores. This combination of vegetable juices has been extensively advertised in magazines and newspapers, on outdoor signs and in other ways under the trademark "V-8" and is widely known by that name, though it is also known as a vegetable juice cocktail. The plaintiff makes and sells several other well known food products and also sells dry vitamin tablets in packages bearing its trade-mark "Stams."

The defendant began on July 1, 1942, to sell in New York and in interstate commerce dry vitamin tablets which he bought on the open market and packed in thin elongated cardboard cartons having printed on them, inter alia, a colored disc bearing the symbol "V-8" over the words "Vitamin Tablets" in slightly smaller type. The sentence "These tablets contain 8 vitamins and 3 minerals" in still smaller type was also on the package. The defendant applied for registration of this trade-mark "V-8" for vitamin tablets when he began using it, and for a time used a registration notice with it but discontinued so doing in May of the following year on advice of counsel. His application for registration was denied and he abandoned it, after changing his tablets first from a kind containing three minerals to one containing four and then to another which contained nine minerals and marking his packages accordingly. The defendant sells his vitamin tablets only to drug stores and pharmaceutical dispensaries. When he selected the symbol "V-8" for use on his vitamins he knew "V-8" was being used as a trade-mark for vegetable juices and he also knew that, as the parties have stipulated, the mark had already been used on automobile engines, on brushless shaving cream, and on an after-shave lotion.

On March 23, 1943, attorneys for a predecessor of the plaintiff wrote the defendant that the latter's use of "V-8" was considered to be an infringement of the registered trade-mark "V-8" for vegetable juices, and they demanded his discontinuance of such use. They wrote again on April 15, and attorneys for the plaintiff did likewise on July 7; but on advice of counsel the defendant made no reply to any of these letters. This suit was brought on October 15, 1943. On November 5, 1943, the defendant began using cartons bearing a prominent red disc on which "V-8" appeared near the top in large white letters, and has continued such use ever since. Below in smaller letters is the word "tablets." The symbol "m-9" is printed in black lettering about one-fifth the size of "V-8" between the latter and the word "tablets." The lower part of the disc carries in alternate black and white lines the legend "Each tablet contains 8 vitamins and 9 minerals." In this way the defendant has made "V-8" the distinctive part of the mark under which he sells his vitamin tablets, and we shall spend no time discussing the differences between the marks as above described. It is apparent that the "V-8" is the dominant feature of each mark, and for present purposes it must be taken as established that the defendant has used on the containers in which his vitamin tablets are sold the distinctive feature of the plaintiff's registered trade-mark for vegetable juices.

The fact that the plaintiff's trademark is registered is of no particular significance on this appeal. A valid registration only secures to a registrant, and to his successors, the right to sue for infringement in a federal court, Industrial Rayon Corp. v. Dutchess Underwear Corp., 2 Cir., 92 F.2d 33, and there is federal jurisdiction in this case anyway because of diversity of citizenship. Yet we agree with the court below that the mark is a non-descriptive one when used on the container of a vegetable juice cocktail. The letter V by itself no more signifies "vegetable" than it does any other word of which it is the initial letter and it is only when resort is had to other parts of the label that one may glean that it stands for "vegetable." As much is true of the figure 8, and when put together as they are in the mark they are only an arbitrary and fanciful symbol chosen to designate the plaintiff's vegetable juice cocktail. This mark has become the distinctive name of that cocktail not because it is inherently descriptive of anything but because it has been so used that it has become associated in the public mind as the banner of that product. That does not make the mark descriptive but is only evidence of the effectiveness of its use. By repeatedly advertising the fact that its cocktail is made of the combined juices of eight vegetables, the plaintiff has undoubtedly taught the purchasing public that "V-8" on a tin can means such a cocktail. Except for this association, we think, no one could reasonably be expected to know that "V-8" designated a vegetable juice cocktail, or any other particular thing for that matter, unless it be something so described by both shape and number, like an eight cylinder automobile engine, for instance, having cylinder blocks set at an acute angle to each other.

A trade-mark is not one in gross like a patent right but is a right of user in connection with a trade or business to designate the product to which the mark is applied in that trade or business. It is the use of the mark in a going trade or business to distinguish the product of the user from that of others and not the choice of it which creates what becomes the subject of property in the mark. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141. Consequently the plaintiff, having established such user, is entitled to be protected from the use of it by others in the same territory on goods which will be thereby confused with its product and likely to be passed off as such. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713. Prior use by another does not necessarily make a mark invalid but only limits the amount of protection to which a trade-mark may be entitled. Treager v. Gordon-Allen, 9 Cir., 71 F.2d 766.

The plaintiff having proved its ownership of a valid trade-mark "V-8" which has become the distinctive symbol of its vegetable juice cocktail within the territory in which the defendant is selling his vitamin tablets under a mark so similar that it must be treated for present purposes as the same mark, the remaining question on this phase of the appeal is whether its use on dry vitamin tablets is an infringement.

The plaintiff's cocktail is a food which has been much advertised to be desirable to buy and use because it contains vitamins and minerals. The defendant's dry vitamin tablets are very different in appearance and however marked could not be mistaken by anyone for liquid vegetable juice, but that fact is a colorless one. The gist of this action for infringement of the plaintiff's mark, just as in the related cause of action for unfair competition, is confusion not as to the kind of product but as to the source of the product. We do not find it necessary to decide whether or not vitamin tablets are properly to be classified as a food in the same category with vegetable juice within the meaning of the registration statute. 15 U.S.C.A. § 85. They are eaten with food and are widely represented to supplement it by the addition of properties essential to health in which the diet of the user may be deficient for one reason or another. It might reasonably be expected that a manufacturer or distributor of food would also make or distribute vitamin tablets. Indeed, it does appear, as already noted, that this plaintiff produces and distributes dry vitamin tablets under the mark "Stams."

The protection which the law gives the owner of a trade-mark is not confined to the goods upon which it is, or has been, used by the owner of it but extends to products which would be reasonably thought by the buying public to come from the same source if sold under the same mark. Aunt Jemima Mills Co. v. Rigney & Co., 2 Cir., 247 F. 407, L.R.A. 1918C, 1039; Vogue Co. v. Thompson-Hudson Co., 6 Cir., 300 F. 509; Wall v. Rolls-Royce of America, Inc., 3 Cir., 4 F.2d 333. His mark is the brand by which his goods can be identified, and when it is used by another the reputation of his mark, and consequently his own business reputation, are placed to that extent beyond his control. Unless the use by that other is upon goods so unlike his own or in territory so far from that which he has exploited that it will not create confusion, it will be enjoined. Yale Electric Corp. v. Robertson, 2 Cir., 26 F.2d 972; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272.

The court below found on...